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September 30, 2005

How to Understand Your Lawyer - Interpreting "Patentese"

Do you know what the heck your patent attorney means when you hear that there was a rejection based on prior art, or that there was an objection to the specification, or even that your patent claims were allowed? Hard as we try, we still often lapse into speaking "patentese" (a specialized field of "legalese"). You should never be afraid to ask your lawyer to explain. After all, they work for you. But, if you are hesitant to point out our failure to actually speak English, you needn't suffer any longer.

Patently-O: Patent Law Blog to the rescue. Dennis Crouch recently posted links to a few patent glossaries, claiming that they are "a great place to start if you are a new lawyer, agent, or paralegal trying to learn the trade." The only thing I would change about this statement is to include a patent-seeker or a patentee in this group of people.

Posted by Melody Wirz at 09:18 AM.
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September 29, 2005

Invention Quiz

Below are a few True/False questions to test your invention knowledge. To reveal the answer, highlight the bracket that follows the question.

  • The Statue of Liberty was patented. [True ] more
  • The brassiere was invented by Otto Titzling. [False] more
  • The flush toilet was invented by Thomas Crapper. [False] more
  • The patent on the phonograph was issued 57 days after filing. [True ] more

Posted by Melody Wirz at 11:23 AM.
Permalink: Invention Quiz

September 28, 2005

phosita ::: quick links for 2005-09-28

Posted by Melody Wirz at 05:13 PM.
Permalink: phosita ::: quick links for 2005-09-28

September 27, 2005

phosita ::: quick links for 2005-09-27

Posted by Melody Wirz at 05:20 PM.
Permalink: phosita ::: quick links for 2005-09-27

September 26, 2005

phosita ::: quick links for 2005-09-26

Posted by Melody Wirz at 09:47 AM.
Permalink: phosita ::: quick links for 2005-09-26

September 22, 2005

and you thought you were having a bad day?

 
Have you ever had one of those days? 
 
You know the type - where the wierdest things happen and everyone is amazed they happened to you.  Well, it could always be worse.
 
Wired Magazine has an online article describing Philip French's bad day... a bad day that has kept on going and going and going...
When New England inventor Philip French had his epiphany 15 years ago, he didn't dream it would lead to an invention that would be pressed into service in a top-secret government project, or spawn an epic court battle over the limits of executive power. He was just admiring a tennis ball.

The ball's seam, with its two symmetrical halves embracing each other in a graceful curve, intrigued him. "I thought, my god, I bet you can do something with that kind of shape," he recalls. He was right. French and two colleagues went on to design and patent a device now called the Crater Coupler, a simple, foolproof connector for linking one pipe or cable to another without nut threads or bolted flanges.

The story is worth a read and is an especially pointed, albeit esoteric, lesson for inventors who are contemplating approaching a company or others regarding licensing their technology. 

Patently-O also does its standard bang-up job of reporting the Fed. Cir. opinion as well.

Posted by Douglas Sorocco at 09:51 PM.
Permalink: and you thought you were having a bad day?

September 21, 2005

"Cheap" Logo Design Can Be Costly

Today, I came upon the boingboing post Logo rip-offs, which links to an internal page on Bad Design Kills. The page, titled LOGOWORKS.COM RIP-OFFS, shows several logos that are suspect from a trademark view.

For example, the logo on the right looks strikingly similar to the one on the left. According to the sources I could find on the internet, the one on the left was created by the discount logo designers at logoworks.com.

This caused me to think about the liability of the designers for trademark infringement. I looked to their Terms and Conditions of Use and discovered that "no trademarks or service marks . . . are being conveyed." Unfortunately, the design firm is not responsible for any kind of trademark clearance. This would likely be true even without such a disclaimer.

While I believe that the "copycat" designers may have a copyright problem, I think they're probably okay when it comes to trademarks. They are not using the mark to sell similar goods. Rather, they're selling the mark itself.

The moral of the story: Call your favorite trademark lawyer before using a new logo, especially if the logo comes from a discount designer.

Posted by Melody Wirz at 02:43 PM.
Permalink: "Cheap" Logo Design Can Be Costly

"Katrina" Trademarks

New York Daily News reports Bad taste! Katrina booze logo sought. Apparently a few guys from Louisiana have decided to capitalize on the disaster by filing a registration on "KATRINA" for alcoholic beverages. I guess the drink is probably more potent than the average New Orleans Hurricane.

However, other "Katrina" applications have been filed since the storm. For example, "KATRINA BLOWS BUSH SUCKS" for bumper stickers and "KOKUA FOR KATRINA" for musical entertainment. However, the most startling mark was registered in 1986: "KATRINA AND THE WAVES" for musical entertainment services. You probably don't remember the band, but I would be willing to bet anyone over the age 25 remembers the hit, "Walking on Sunshine." How's that for serendipity?

 

 

 

Posted by Melody Wirz at 10:06 AM.
Permalink: "Katrina" Trademarks

September 19, 2005

Fate of Redskins Trademark Registration Still Uncertain

The good folks over at IP News Blog point out Court Revives case against Redskins. The Court of Appeals for D.C. reissued the opinion earlier this month.

The court reversed the lower court ruling on the issue of latches. Pro-Football, Inc. claimed that this finding would bring uncertainty to trademark owners. However, the court was unsympathetic. While the plaintiffs in the case claim that the term "Redskins" was disparaging from its registration, I still wonder about the impact of this case on a mark that later becomes disparaging.

Interestingly, the impact from a loss in the case would not require the NFL franchise to change its name. Instead, it would result in the registration being cancelled. The team would still have all the rights associated with trademarks at common law. While a registration provides proof of the strength of the mark, the fact that the mark was registered for decades would probably have some bearing on the outcome of any future trademark dispute.

Although it has been ongoing since 1992, this is still a case to watch.

Posted by Melody Wirz at 02:53 PM.
Permalink: Fate of Redskins Trademark Registration Still Uncertain

September 16, 2005

Do You Need a Trunk Monkey?

I learned of the trunk monkey ads from my friend's blog smack my booty. The clips are sponsored by Suburban Auto Group (near Portland).

I highly recommend watching at least one trunk monkey commercial to see if you need a trunk monkey.

Unfortunately, the application for a trademark on "trunk monkey" has ben initially refused. However, it looks like the registration could be granted if the proper formalities are addressed.

By the way, all of the links above are suitable for viewing at work.

 

 

Posted by Melody Wirz at 12:11 PM.
Permalink: Do You Need a Trunk Monkey?

September 15, 2005

Cold Cereal Battle Heats Up

Cereal bars may be the next great thing to happen to fast food. But, should the first person to capitalize upon the idea get the exclusive rights to the concept? Maybe. According to this, The owners of Cereality are very serious about cereal. They have sent informative letters to competitors "Bowls - A Cereal Joint" and The Cereal Bowl. According to the article, the letters threaten "serious legal consequences" for infringement of Cereality's trademarks - I found 5 registered and 2 currently pending in the USPTO.

While I don't see much similarity in the trademarks, Cereality also has a patent pending for "Methods and Systems for Providing Food, Beverages, and Associated Goods and Services in a Retail Environment." However, a pending patent doesn't mean much until the patent issues, and a non-final rejection was mailed last month. So, the question remains whether the patent will issue, and if so, whether the patent will stand up to the test of litigation.

However this dispute turns out, I'm looking forward to visiting a cereal bar soon.

Posted by Melody Wirz at 10:36 AM.
Permalink: Cold Cereal Battle Heats Up
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September 14, 2005

"Made in the USA" to Air Tonight

Thanks to this post, I remembered that Made in the USA will air for the first time tonight at 10/9C. As you may recall, we mentioned the show in an earlier PHOSITA post. Be sure to watch, or to set your TiVo.

But, if you set your TiVo, be careful. Apparently TiVo won't save certain shows or allow moving them. It looks like your right to time-shift under the Betamax case is being limited by the networks and TiVo. It was a mistake this time, but TiVo has tipped its hand about some technological capabilities. I'm reminded of a great book, 1984.

Posted by Melody Wirz at 09:47 AM.
Permalink: "Made in the USA" to Air Tonight
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September 13, 2005

U.S. Patent Quality Questioned in Industry Poll

According to this, the Intellectual Property Owners Association (IPO) finds that patent quality is deteriorating. The organization released survey results that indicate that 74% of respondents think they will be spending more on patent litigation in the next few years.

The article states that "[h]igh quality patents are usually thought of as those that will hold up if challenged in court," and points out that the USPTO is responsible for issuing high quality patents. The article also mentions that hundreds of millions of dollars are being diverted from fees paid to the USPTO to fund other government programs. It states "IPO believes the loss of funding and delays in modernizing the agency's operations have been primary causes of the current weaknesses in patent quality and the growing delays in processing."

While I don't even try to claim to know more than the IPO, I don't know that I agree with many of its findings.

First, I'm not convinced of the measure of a high quality patent. There have been numerous ways of measuring patent quality, including later citations and success in court. However, I believe that a high quality patent is one that never even needs to go to court. Sure, a patent that is well-written, clear and thorough will stand the test of litigation. However, the best patents don't require litigation to prove their value. In fact, the best patents would scare off potential lawsuits. So, I disagree that quality patents are those that succeed in court.

Second, I am not convinced that the deterioration in patent quality is due to fee diversion. While this does cause USPTO resources to be limited, I think the patent drafters need to assume some responsibility for the quality of the patents. Before I took the Patent Bar, I was convinced that upon issuance, a patent was nearly indestructible. However, I have since learned that issuance has little to do with anything other than the payment of an issue fee and maintenance fees. Litigation often proves to be the true test of patentability. Every good patent should be able to survive litigation (if it comes to that). The judge or jury is the true "Examiner" of the patent. The guy (or gal) working for the USPTO is just an expensive "trial run."

I think if every patent professional drafted patents with litigation in mind, the quality of patents would improve. This would result in reduced litigation. Even so, I admit that higher quality "trial runs" would also result in reduced litigation.

Posted by Melody Wirz at 02:54 PM.
Permalink: U.S. Patent Quality Questioned in Industry Poll
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Tuesday Fun and Fundraising

Posted by Melody Wirz at 02:00 PM.
Permalink: Tuesday Fun and Fundraising

September 12, 2005

phosita ::: quick links for 2005-09-12

Posted by Melody Wirz at 04:49 PM.
Permalink: phosita ::: quick links for 2005-09-12

September 08, 2005

IP and Katrina

  • As many reports plainly show, there is little that survived Katrina.

    However, IPFrontline reports Intellectual Property Survives Hurricane Katrina. The author states "it occurred to me that intellectual property - copyrighted artwork, patented inventions, computer code, brand names - may be all that remains of thousands of innovative businesses in the New Orleans, Gulfport, Biloxi, Mobile and other Gulf coast areas. In certain other institutions - hospitals and universities, for example - intellectual property licensing may in fact be the primary way to collect new revenues for some time to come."

    I guess the nifty thing about intangible property is that it can survive even a category 5 hurricane.


  • There is an interesting post at The Trademark Blog: Seized Counterfeit Goods Given To Katrina Evacuees. The post refers to a Washington Times article, and asks whether this type of distribution has happened before. It also brings up a point about the safety of the goods. Usually seized goods are destroyed (after a final determination of infringement).

    I also found another Washington Times article about this. Are the policy reasons for destruction of infringing goods overridden by the necessity of the hurricane victims? What if there has not been a final determination of infringement? Why weren't the goods already destroyed? Things that make me go hmmm.

Update 9-12-05: The USPTO considers Katrina to be an "extraordinary situation," so if you were affected and have late maintenance fees as a result, you're off the hook. But the USPTO urges you to act promptly to remedy the delay.

Posted by Melody Wirz at 10:12 AM.
Permalink: IP and Katrina
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September 07, 2005

ip memes' newest members

SubscribeIP Memes will include a couple of new contributors in the next issue due out on September 26 - namely, Matt Buchanan of the Promote the Progress blog and myself.

If you're not familiar with The TechnoLawyer Community...you should be. TechnoLawyer provides a number of great newsletters (including IP Memes), and a forum where "technolawyers" can ask one another questions about technology (i.e., "has anyone every used _______ and what did you think about it?"). It is an excellent resource for all tech attorneys, and has an archive which I have searched from time to time with questions (what scanner to purchase, whether I should upgrade to the latest version of __________, etc.). The best part? It is free. Try it, if you don't agree you can easily unsubscribe.

Over the past year Steve Nipper of The Invent Blog has been writing the IP Memes newsletter. IP Memes is described as “a weekly newsletter that explores emerging technology-related intellectual property issues — or “memes” as we call them. Think of it as your coal-mine canary for intellectual property issues.”

Steve has been doing a solid job this past year - Matt and I are both thrilled to be asked to join him to continue IP Memes' tradition of excellence and join some of the IP community's finest commentators and thinkers - including Dennis Kennedy, Denise Howell, Gail Standish, Kevin Grierson and Kurt Calia - all of whom, are IP Memes alumni.

Click the image above to be taken to the signup form for IP Memes and yes, it is just another example of the collaboration taking place over at Rethink(IP). You never know where we might "pop up" next.

Posted by Douglas Sorocco at 08:06 PM.
Permalink: ip memes' newest members

U.S. Patent Office Discloses Confidential Data

 
Via the TaxProf Blog (otherwise known as Paul L. Caron), comes this little bit of governmental fiasco:
Warren Rojas (Investigative Reporter, Tax Analysts) has published Patent Office Rules Allow Simple Access to Tax, Financial Data, 108 Tax Notes 1079 (Sept. 5, 2005), also available on the Tax Analysts web site as Doc 2005-18195, 2005 TNT 171-1.  Here is the opening:
 
In a practice that brings up serious personal privacy issues, the U.S. Patent and Trademark Office (USPTO) routinely makes available to the public tax returns and other personal information about inventors, an investigation by Tax Analysts has revealed.

Few inventors are aware that their tax and financial records, which they are often required to submit to the USPTO if they fall behind on their patent maintenance fees, are available for public inspection.
During recent trips to the USPTO file information unit in Crystal City, Va., Tax Analysts retrieved more than a dozen patent files on inventors from across the country that contain individual and joint federal tax returns, wage and withholding reports, monthly bank statements, Social Security Administration benefit statements, credit reports, and mortgage foreclosure warnings. Included in those documents are names, Social Security numbers, credit card numbers, bank account numbers, home addresses, income data, mortgage histories, and student identification numbers.
 
IRS and Treasury officials maintain that information obtained by other government agencies -- in this case, taxpayer-furnished data sent to the USPTO in return for commercial protection -- is exempt from the stringent antidisclosure provisions in section 6103 of the tax code. "There are significant privacy concerns, but they don't have anything to do with [section] 6103," a Treasury counsel said. Other tax officials remained baffled by the disclosure issue, questioning whether the USPTO policies run counter to the Privacy Act of 1974 (P.L. 93-579), section 6103, or both.

Posted by Douglas Sorocco at 04:43 PM.
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LEGO My LEGOS - The Significance of "S"

You have most certainly heard of "LEGOS." They have long been one of my favorite toys. However, when you try to go to the website legos.com, you will quickly find that you have made a mistake. A message sponsored by "LEGO" appears to inform you that the product is called '"LEGO bricks or toys" and not "LEGOS."' The site then directs you to the proper site, lego.com.

According to a techdirt post, this is a little unsettling. The post states that the website "gives you a lecture on how to properly spell their name."

Why would LEGO be so protective of this mark? I cannot say. The company website provided little explanation outside of the origin of the name: 'The name LEGO comes from the Danish words "Leg Godt," which means "Play well." In Latin it means "I put together."'

I found a federally registered trademark for "LEGGO'S," but it was for frozen food (not likely confused with interlocking plastic building blocks). My best guess is that this message is an attempt to avoid genericism. However, the avoidance of using an "S" on the end of "LEGO" seems a little weird to me. It is common to pluralize a word by adding an "S," and "LEGO" in my mind refers to a single "LEGO brick." Therefore, multiple "LEGO bricks" would still be "LEGOS." Maybe I'm missing something about why we are not supposed to use the simple term "LEGOS" instead of the much more complex "multiple LEGO brand bricks or toys."

UPDATE 9/7/05: An "expert" has helped me understand a little more by pointing me to the part of the LEGO company website that covers this better. It states 'If the LEGO trademark is used at all, it should always be used as an adjective, not as a noun.' I guess I should have realized that trademark always refers to the source and not the product itself. I believe this is the second law of trademarks. The first law of trademarks is trademarks arise out of USE. Even so, it is still common to use trademarks as nouns, with the intent to identify the source. Source is often implicit in the noun itself. For example, people do not say they drive a "Ford brand car," they say they drive a "Ford." This use leaves little question about the source of the "Ford." 

Posted by Melody Wirz at 10:11 AM.
Permalink: LEGO My LEGOS - The Significance of "S"
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September 06, 2005

Carnival of the Capitalists is up at rethink(ip)

Carnival of the Capitalists is up and hosted by Rethink(IP) this week - so stop on over and have a look.  It is pretty darn good, if I may say so myself.

While you are at it - the Blawg Review is hanging out over at Blawg Wisdom It is well worth the look as well.

Enjoy all the carnival goodness out there!

Posted by Douglas Sorocco at 08:13 AM.
Permalink: Carnival of the Capitalists is up at rethink(ip)

September 05, 2005

Bin Laden's image terrorizes abc

Via Findlaw (via the AP)...

Rare photographs of Osama Bin Laden, including exclusive shots of the Al-Qaida Osama Bin Laden FBI Most Wanted Photographleader on a battlefield, were broadcast by the ABC television network without the Egyptian photographers' permission, according to a lawsuit filed in U.S. District Court.

Essam Mohamed Aly Deraz is seeking $10 million in damages in the lawsuit filed Thursday. He is claiming copyright infringement and is asking a judge to prohibit the network or any of its affiliates from using the photographs.

In 1998, Deraz twice agreed to allow the network to use his photographs on a one-time only basis for which he was paid $7,000 and $8,000 respectively, the lawsuit states. But the network continued to use the photographs without Deraz's authorization.

Apparently the images show Bin Laden fighting with the Mujahideen during the 1980s  According to the complaint filed in Denver (PDF), "(Deraz) was the only cameraman with Osama bin Laden in the late 1980s, and his film and photographs were the only ones ever taken then that show Osama bin Laden in the battlefield."

A sampling of the images filed in the action are here: one, two, three and four. All images are scanned PDFs.

Posted by Douglas Sorocco at 10:41 PM.
Permalink: Bin Laden's image terrorizes abc

US Patent Office Scammers

From the USPTO website:

An entity or person issuing a document, for example, a "certificate," allegedly by the Chief Financial Officer of the United States Patent and Trademark Office for payment of USPTO fees and lawyer fees is NOT affiliated with the United States Patent and Trademark Office.

The United States Patent and Trademark Office does NOT issue such "certificates." If you have any questions, please call the Office of Independent Inventor Programs at (703) 306-5568.

An entity doing business as the 'United States Trademark Protection Agency'is NOT affiliated with the United States Patent and Trademark Office.

Report or read more about Scams & Fraud(Consumer Sentinel) • "Facts for Consumers" Invention Promotion Firms Brochure

Report Complaint re: Invention Promoter [PDF] also Fillable PDF version

Posted by Douglas Sorocco at 09:24 AM.
Permalink: US Patent Office Scammers

September 02, 2005

Diddy's Newest Ditty

Model Tyson Beckford has sued Diddy for breach of contract and use of his trademarked image. The suit was filed in the Southern District of New York on August 12. For the story, click here. For the complaint, click here. Apparently, Mr. Beckford has only been paid about half of the contract price for modeling Sean John clothing.

In other Diddy trademark news, rapper 50 Cent claims Diddy has changed from his previous name "P. Diddy" in order to more closely resemble 50's nickname "Fiddy" (an alternate pronunciation of "fifty"). According to this post, Fiddy has been quoted as saying "I'm Fiddy and now Puffy wants to be Diddy, trying to move his name closer to me, you know what I'm saying?"

Posted by Melody Wirz at 01:50 PM.
Permalink: Diddy's Newest Ditty
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Katrina Relief - Photo Auction

This isn't really related to IP law, but since the photos fall within copyright, I thought it could be included on a Friday.

Artists have donated photos for an auction to benefit Katrina victims. You can view the photos and bid on them at Katrina Relief Auction.

One photo up for auction is "Promenade on Bourbon St." shown below. You can click on it to go to the auction for that specific photo.

Posted by Melody Wirz at 10:06 AM.
Permalink: Katrina Relief - Photo Auction

needed tgif - how to sell car stereos

It has been a very long horrifying week watching the scenes of the area devastated by hurricane Katrina.  I have no doubt that the generosity and compassion of the American people will rise to the occasion and we will take care of those who are in so much pain and turmoil.  

If you can give, please do – the blogging community, led by The Truth Laid Bear blog, has rallied to the cause and has a list of worthy charities providing support and aid. 

As the Chairman of the Spina Bifida Association of America, I can attest to the need for donations across all charitable organizations.  Find a charity that corresponds to your concerns – these organizations now, more than ever, need your support to provide needed and directed assistance to their communities. 

Sometimes, laughter can serve to heal and ease the pain – this advertisement for a stereo company made me laugh out loud this morning.  It is worth the look and has some PG-13 type humor to it.

We all need a little TGIF today – while you are laughing, remember to reach out and be generous toward our fellow Americans.

Posted by Douglas Sorocco at 09:16 AM.
Permalink: needed tgif - how to sell car stereos

September 01, 2005

phosita ::: quick links for 2005-09-01 (Part 2)

  • Iraq Resumes Trademark Filing - Does this mean that they're officially "civilized" again?
  • Million Dollar Patent - After the most recent changes in the patent law, you must pay extra fees for filing a patent application with more than 3 independent claims or for more than 20 total claims. Since this application had 13,305 claims, the bill for filing came to $1,249,075. And you thought it was expensive to pay the lawyer!

Posted by Melody Wirz at 03:05 PM.
Permalink: phosita ::: quick links for 2005-09-01 (Part 2)

phosita ::: quick links for 2005-09-01

Posted by Douglas Sorocco at 06:17 AM.
Permalink: phosita ::: quick links for 2005-09-01